United States: Cover All Your Bases In ITC Discovery

Certain Access Control Systems and Components Thereof,
Inv. No. 337-TA-1016 (May 31, 2017), is a good lesson in covering
all your bases. Relying on a non-infringement decision by ALJ
Pender, respondents assumed that they did not need to present an
invalidity case, and they failed to take certain relevant
discovery. When Judge Pender's decision was reversed by
the Commission, they tried to get that discovery. Judge
Pender ruled that it was too late.

The Chamberlain Group, Inc. ("CGI") alleged that a
group of respondents infringe three U.S. Patents including U.S.
Patent No. 7,161,319. All the claims of the '319 Patent
require a "wall console." Respondents argued at the
Markman hearing, and Judge Pender agreed, that "wall
console" should be construed as "a wall-mounted control
unit including a passive infrared detector." Order No.
13 (Jan. 26, 2017). The parties stipulated to
non-infringement under that construction and Judge Pender so
ordered. Order No. 23 (Mar. 27, 2017). CGI
appealed the claim construction to the Commission. On May 5,
2017, the Commission found that CGI's broader construction of
"wall console" was correct and vacated the summary
judgment determination. In the interim, the Investigation
proceeded to an evidentiary hearing on the other asserted
patents. On remand, and after the evidentiary hearings on the
other patents, Judge Pender extended the target date until February
23, 2018 in order to schedule a second evidentiary hearing for
allegations relating to the '319 Patent . Order No. 29
(May 8, 2017).

In response, on May 24, respondents moved for leave to subpoena
a third party for certain prior art, because that art was
"possibl[y]" anticipatory under the Commission's
construction of "wall console" (but not under Judge
Pender's original construction). Judge Pender denied the
motion. Order No. 33 (May 31, 2017). Judge Pender held
that respondents should have been aware of the possibility that the
Commission would adopt CGI's construction on review and should
have prepared subpoenas during the discovery period
accordingly. Furthermore, the art was only potentially
anticipatory. "This is too much uncertainty for CGI to
defend against and for me to schedule around at this point in the
investigation."

Takeaway

Judge Pender's decision means that parties who limit their
discovery in reliance on administrative law judges' non-final
decisions do so at their own peril. A party's win on a
particular issue does not mean it can rest on its
laurels—parties should endeavor to take contingent discovery
in case the Commission reverses the ALJ. Otherwise, as this
decision shows, there is a possibility that the ALJ will not grant
leave to take the discovery after remand.

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